35 U.S.C. · Part II · Chapter 11, Application for patent

35 U.S.C. 111: Application

In plain English

Section 111 sets out the two ways to file a US application. A nonprovisional application under section 111(a) must include a specification as required by section 112, any drawings required by section 113, an oath or declaration under section 115, and the filing fee. A provisional application under section 111(b) needs only a specification that meets section 112(a) and any necessary drawings: no claims, no oath, and only the provisional filing fee.

The filing date of either type is the day the USPTO receives a specification, with or without claims (sections 111(a)(4) and 111(b)(4)). The fee, the inventor's oath or declaration and the claims of a nonprovisional can follow later, with a surcharge, within the period the USPTO sets. If they do not arrive in time, the application is abandoned.

A provisional application is never examined. It is abandoned 12 months after its filing date and cannot be revived after that, so it is only useful as the basis for a priority claim in a nonprovisional or PCT application filed within the 12 months (section 119(e)). A provisional cannot itself claim priority to anything earlier. Section 111(c) adds a third option, filing by reference: an application gets a filing date by pointing to a previously filed application (by number and office), with a copy of that application filed later.

Annotation by Raj Sutariya, Co-founder, PatentAssist.ai. General information, not legal advice; the statute below governs.

AIA and pre-AIA

The America Invents Act made it possible, from September 16, 2012, for an assignee or obligated assignee to be the applicant, rather than only the inventor (section 118 and 37 CFR 1.46). The Patent Law Treaties Implementation Act then removed the need for claims to get a filing date and added reference filing, for applications filed on or after December 18, 2013.

Text of 35 U.S.C. 111

Current text, quoted from the official United States Code.

(a) In General.—
(1) Written application.— An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director.
(2) Contents.— Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) Fee, oath or declaration, and claims.— The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) Filing date.— The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(b) Provisional Application.—
(1) Authorization.— A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) Claim.— A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) Fee.— The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) Filing date.— The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States Patent and Trademark Office.
(5) Abandonment.— Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3), if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.
(6) Other basis for provisional application.— Subject to all the conditions in this subsection and section 119(e), and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent.
(7) No right of priority or benefit of earliest filing date.— A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) Applicable provisions.— The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) Prior Filed Application.— Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.

Practical notes

A provisional is only as good as its disclosure. Under section 119(e) a later claim gets the provisional's date only for subject matter the provisional describes and enables under section 112(a). A slide deck or a one-page summary rarely supports the claims you eventually need; write it like a full specification and include every embodiment and variation you can foresee.

File an application data sheet (37 CFR 1.76) with the nonprovisional. It is where the applicant, inventors, correspondence address and the priority and benefit claims go, and a benefit claim left out of it is easy to miss until the 4- and 16-month deadline in 37 CFR 1.78 has passed.

If the 12 months run out, the provisional cannot be revived, but section 119(e) lets you restore the benefit claim if the nonprovisional is filed within 2 more months and the delay was unintentional, with a petition and fee. Any public disclosure in the meantime may still be prior art.

Related rules and guidance

37 CFR: § 1.46, § 1.51, § 1.53, § 1.16, § 1.76
MPEP: 201, 601, 602